The High Court at New Delhi
Judgment delivered on: November 12, 2021
The plaintiff of the case is a known alcoholic beverage manufacturer whose products with numerous fruit essences are sold under the mark “BREEZER”. Whereas, defendants are also a beverage manufacturer but majorly fruit-based that is non-alcoholic and sells it under the name “FREEZ Mix”. The present suit of trademark infringement and passing off has been filed by Bacardi (Plaintiff) against Bahety (Defendant). It was alleged that the defendant has been using the mark “FREEZE” and wordmark “FREEZMIX” in such a manner that it explicitly infringes the registered word mark along with the shape mark of the plaintiff. As a result, the plaintiff filed for an injunction against the defendant’s product.
- Whether the defendants’ mark constitutes an infringement of the plaintiff’s registered trademarks.
- Whether injunction shall be granted.
Section 9(3), Section 28(1) Section 29 and Section 31(1) of the Trade Marks Act, 1999 (‘Act’).
The counsels appearing on behalf of the plaintiff presented five-fold contentions majorly. Firstly, the defendants’ action of continuing usage of the device mark “FREEZ” even after failing to secure its registration. It was claimed that they persisted in infringing the plaintiff’s trademark even after a month of receiving a desist notice. The second contention that was presented was related to the similarity between the shapes of the bottles which both parties manufacture. It was submitted that the defendants copied the varied features of the bottle that the plaintiff manufactures. Thirdly, the factor of colour, as the flavour of the plaintiff’s beverage and the colour of the bottle are in correspondence, it was contended that the same is being followed by the defendants.
Further, it was asserted that there was a phonetic and visual similarity between the mark “BREEZER” and “FREEZE”. It was claimed that the word “mix” in the mark “FREEZ mix” are written in a non-discernible manner which is challenging to identify and is not visible in an instance. Indicatively, it seems like an intentional attempt to jeopardize the plaintiff’s goodwill.
Lastly, the counsels contended that the defendants have deliberately designed their product in an almost similar manner to deviate and create confusion among the consumers. As a result, this would lead to a misconception among the consumers to believe that there is an association between the products.
The counsels appearing on behalf of defendants highlighted Section 9(3) and stated that the Act bars the registration of the bottle’s shape as a trademark because the same is familiar to the business. Thus, mere similarity in shape does not constitute a case of trademark infringement.
Further, the counsels denied the claim of any visual or phonetic similarity between the logo. It was pointed that the term “BREEZER” consists of two syllables, whereas “FREEZ” includes only one syllable. Also, it was submitted that the place of selling and the targeted consumers for both the products are entirely different as the plaintiff’s product is an alcoholic beverage and the defendant’s product is non-alcoholic.
Moreover, countering the claim of colour similarity, the counsels’ responded that the plaintiff’s product uses all the seven primary colours, and hence, there stands no claim on its exclusivity. Therefore, the trade dress and the products of both the parties are entirely different and could not be claimed as confusing to one another.
Observations of the Court
The fact that despite the defendants being aware of the plaintiff’s registered trademark did not seek for the revocation of its mark was observed to be unjust. On the other hand, as the plaintiff has registered the “shape mark” and the word mark “BREEZER” u/s 31(1), it does provide exclusivity to use the same. As a result, the court observed that if any party uses the shape which is deceptively similar to the plaintiff’s product and has the tendency to confuse the public, then it does lead to infringement as according to Section 29(2)(b) of the Act.
Hon’ble J. Hari Shankar observed that though the defendants registered for the word mark “FREEZEMIX”, but herein the word “FREEZE” is majorly depicted to the public in inexplicably large letters with the word “mix” written in comparatively much smaller letters. This, in particular, cannot be believed to not have caused any confusion among the mark of both parties. Thus, it was stated that the same tends to portray an association between the plaintiff and the defendants.
Hence, by virtue of Section 29(2), it was stated that the defendant’s mark is likely to cause confusion among the public; further, by relying on the judgment Amritdhara Pharmacy v. Satya Deo Gupta, it was quoted that “when the test of phonetic similarity is applied, then in such case one shall compare the marks for the viewpoint of a person of imperfect recollection, and not one who is familiar with the marks”. Conclusively, the court found a phonetic similarity and observed the defendants had adopted a trade dress similar to that of the plaintiff.
It was concluded that there was a deliberate attempt on the part of Bahety Overseas to establish such a trademark that resembles Bacardi’s. The court observed a similarity in the marks as well as in the designs, which tended to lead an unfamiliar customer to presume that there exists an association between the two marks. Hence, the court granted an interlocutory injunction in the plaintiff’s favor and restrained the defendants to further use the mark “FREEZE mix” and associated trade dress. The injunction shall remain in force till further order.
 AIR 1963 SC 449 15